Intellectual property is a fascinating topic touching so many aspects of modern life, so it’s not surprising that battles over intellectual property rights are often picked up by the media. Indeed, amid what is often a relentlessly depressing news cycle, IP stories can be a welcome break – who doesn’t want to read about supermarkets fighting over caterpillar-shaped cakes? But there’s no doubt that mainstream media reporting of trade mark cases sometimes misses the mark. And sometimes the stories themselves highlight enduring misconceptions about just what IP rights can and can’t protect.

We’ve picked out some recent examples of IP stories that illustrate why it’s always worth talking to a trade mark attorney for commentary and advice.

Infringing a “copyrighted trade mark”

Intellectual Property law can be confusing for non-specialists, and media stories regularly demonstrate a lack of understanding that there is difference between trade marks and copyright, and the two are not interchangeable. This often manifests itself in the headline, as in this story about easyGroup’s trade mark case against charity fundraising platform easyfundraising: “easyJet parent company loses copyright case against easyfundraising.”

The article doubles down on the alleged copyright infringement in the opening paragraph but goes on to report the court’s findings fairly accurately. Even the respected BBC got its headlines in a knot on this story, with its google search results reading:

In this example from the Daily Mail, the story is a lawsuit brought by rapper 50Cent against an alleged copycat product. However, again it is the headline that sows confusion: “50 Cent sues jeweler for trademark infringement after rapper warned him against copying his designs”. It is possible that 50Cent (real name Curtis James Jackson) has a registered design for the necklace in question, and there appear to be concerns about “passing off” as the defendant has allegedly used the rapper’s image when marketing the necklace, but this isn’t clear in the article which also mentions copyright infringement and violation of right to publicity. 

UK Passport Office in an IP Pickle

It isn’t just reporters that get confused about trade mark rights. The United Kingdom Passport Office came in for criticism recently after apparently refusing to issue passports to children whose parents had named them in tribute to characters from popular television shows.

Little Khaleesi is named after a character from the hugely popular HBO series Game of Thrones, but she and her mum Lucy nearly missed out on a trip to Disneyland after her application was rejected by the passport office on the grounds that the word “Khaleesi” is “trademarked” by Warner Brothers (HBO’s parent company). Lucy was advised by solicitors that Warner Brothers’ mark is applicable in relation to goods and services, but the passport office continued to push back, until media awareness prompted it to admit its error.

A similar situation affected young Loki Skywalker, so named to honour the fact that his birthday is May the fourth – popularly known as “Star Wars Day”. This time the passport office said Loki’s name “relates to a trade mark or copyright” and this constituted grounds for refusal. Again, the passport office was forced to make a u-turn, and again, media coverage of the story uses “trade mark” and “copyright” interchangeably throughout.

You can’t trademark that!

When a story about an organisation seeking to register a trade mark hits the headlines, it often provokes concern among a public that believes the business or organisation is seeking to stop anyone else using that word. Ever.

A great example of this took place in 2019, when The Ohio State University filed to register a trade mark for the word THE – at the same time as fashion designer Marc Jacobs also applied to register it. Cue much furore both within the university faculty, online, and in mainstream media – the story even made it into a skit on The Late Show with Stephen Colbert. The idea that an organisation could “trademark” the most commonly used word in the English language was viewed with derision.

But that is exactly what the university succeeded in doing. The story stemmed from the university’s decision to add “The” to its official moniker in 1986, in a bid to distinguish itself from other “OSUs” Oregon State University and Oklahoma State University. After the university’s football players were asked to introduce themselves using “The Ohio State University” a meme took off. Before long, it became strongly associated with the institution, featuring on merchandise included branded clothing. As a result, when Marc Jacobs made the application for use on clothing – after its own use of the definite article gained popularity – the university moved to file an application.

Of course, The Ohio State University isn’t seeking to stop everyone using the word “THE”, just anyone seeking to use it on goods and services in class 25 of the Nice classification system, relating specifically to clothing – in this case college merchandise such as t-shirts, baseball caps, hats and scarves. And in a slightly unusual move, the university is not contesting Marc Jacobs’ application for the same classification either, having entered into an agreement for shared use.

Regardless of the public controversy, The Ohio State University was successful in obtaining its trade mark registration in 2022 and, with a trade mark licensing business that generates $12.5m a year, its investment seems likely to pay off.

These are just a few examples of common myths and misconceptions that often crop up on the media. As with all trade mark-related topics, we’d always recommend consulting a qualified trade mark attorney to get the true story on the topic and often some more angles you hadn’t even thought of. Some media outlets are good at this – as in this coverage of The Ohio State University story.

Do you have any great examples of when media outlets or organisations have got their IP in a twist?